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Removed as inventor with no right to submit evidence: Baksh v. ProbioHealth

December 07, 2012

Baksh v. ProbioHealth, LLC, 2012 FC 1388, is a peculiar case about dealing with inventorship disputes in a Canadian patent application. All of this could have been avoided by ensuring that proper assignments were in place before filing the application.

In this case, one of the inventors, Dr. Bing Baksh, never assigned his rights to the applicant, ProbioHealth, LLC. When he was approached later about executing an assignment, he refused. ProbioHealth then had Dr. Baksh removed as an inventor so that it could carry on alone. Dr. Baksh challenged the Commissioner of Patents’ decision agreeing to ProbioHealth’s request to remove Baksh as an inventor. Interestingly, Justice O’Reilly concludes that the Commissioner could not consider any evidence except the unchallenged affidavit provided by ProbioHealth. Dr. Baksh could not be heard and could not provide any evidence to counter this move to strip him of inventorship.

O’Reilly J. states that the Commissioner could not consider correspondence from Dr. Baksh because he was not the “authorized correspondent”. For that same reason, the Commissioner could not consider Dr. Baksh’s affidavit or the cross-examination on that affidavit when ruling on the request to remove him as an inventor. The Commissioner could only consider the affidavit submitted by ProbioHealth by way of its patent agent.

At the same time, O’Reilly J. acknowledges that Dr. Baksh has never assigned his rights to ProbioHealth and, as such, is in the position of a co-applicant. Nevertheless, even as a co-applicant clearly antagonistic to the other applicant and its appointed patent agent, Dr. Baksh has no right to correspond with the Commissioner? The Commissioner has no obligation to consider the submissions and evidence of co-applicant Dr. Baksh when the other co-applicant is trying to have him removed? Justice O’Reilly believes so. And under the current Patent Act and Patent Rules he may be right.

Consider that when the application was filed, it was filed by a patent agent purporting to be authorized to act on behalf of the named applicant, ProbioHealth. This can be done in the Petition form and is signed by the patent agent, making the patent agent the “authorized correspondent” for ProbioHealth. Under the rules then in place, ProbioHealth was later required to prove by declaration that they had all rights in the invention from the inventors. At that point, Dr. Baksh refused to assign his rights over to ProbioHealth. ProbioHealth then removed all claims that it believed were relevant to Dr. Baksh’s contribution and attempted to carry on alone by having Dr. Baksh removed as an inventor.

ProbioHealth may be perfectly correct that the remaining claims in the application cover an invention to which Dr. Baksh made no contribution. But it seems odd that the Commissioner would allow ProbioHealth to simply assert that without weighing any evidence to the contrary from Dr. Baksh.

Justice O’Reilly suggests that Dr. Baksh could have applied under section 31(4) to be joined as a co-applicant. But, could he? If the Commissioner is not entitled to consider evidence from anyone other than the authorized correspondent under section 31(3), why would it be different for section 31(4)? Indeed, the only exception given in section 6 of the Patent Rules to the requirement of dealing exclusively with the “authorized correspondent” is where an applicant is revoking the appointment of a patent agent.

Dr. Baksh could have tried to revoke the appointment of the patent agent. When there is no jointly appointed patent agent, then the Commissioner is supposed to correspond with the first named inventor, according to the definition of “authorized correspondent” under section 2 of the Patent Rules. Unfortunately for Dr. Baksh, he was the second-named inventor, so this may not have helped him.

O’Reilly J. also suggests that Dr. Baksh could have resorted to section 52 of the Patent Act. This section gives the Federal Court jurisdiction to correct a matter of title to a patent. Note that this does not include a patent application. Does correcting “title” to the patent include the power to change the designation of who is an inventor?

In the end, it seems that the patent regime does not contemplate the Commissioner getting involved in any way in disputes over who is or is not an inventor. He is to accept the word of the first applicant on its face.